Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This Office action is in response to remarks filed on 12/08/2025. Claims 1-13 are pending. A new grounds of rejection is made in view of Urban (EP 1698432) and Tawara (US 2016/0118073), which was a reference previously cited in Office action filed on 12/18/2023. Since amendments were not filed to independent claims and a new grounds of rejection is made, this Office action is a Non-Final Rejection.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-13 are rejected under 35 U.S.C. 103 as being unpatentable over Urban (EP 1698432), as provided by the Examiner in Final Rejection filed on 04/17/2025, in view of Tawara (US 2016/0118073).
Regarding claim 1, Urban discloses a local polishing method (pp. [0001-0007], [0047] in NPL; device of fig. 1 is utilized for local polishing methods for optically effective surfaces) comprising press polishing (pp. [0047-0048]; fig. 1) performed by a work-polishing rotating tool (item 12; fig. 1) urged against a work (item L; fig. 1) by elastic restoring force (via items 92, 88, 100; pp. [0042-0044]; fig. 1) while supplying a polishing solution (solution not explicitly shown; pp. [0010], polishing agent supplied between outer surfer of rotating tool 12 and workpiece L) between the work and the work-polishing rotating tool locally pressed against the work (pp. [0010]).
Though Urban states a good supply of polishing solution contains abrasive components that are to be transported to the point of contact between the rotating tool and the workpiece by means of the liquid (pp. [0005]), Urban does not explicitly disclose the type of polishing solution utilized, such as the polishing solution composed of abrasive grains consisting of organic particles with an average particle size of 5 µm or more dispersed in a liquid to prevent wear on a surface of the work-polishing rotating tool by preventing direct contact between the work-polishing rotating tool and the work.
However, Tawara (US 2016/0118073) teaches a method for manufacturing a glass substrate (abstract and pp. [0021]) comprising a finish-polishing step using a polishing solution containing organic-based particles as polishing abrasive particles (pp. [0021]), and the average particle diameter of the organic-based particles is in a range of 0.5 to 60 µm (pp. [0024]).
First, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to configure the polishing solution containing abrasive components, as disclosed in Urban, to consist of organic-based particles, as taught in Tawara, in order for the press-polishing method to function as intended and further, in order to reduce the amount of abrasive particles sinking into the polishing pad and improve the surface roughness of the workpiece (pp. [0010-0012], [0016-0018], and [0053] in Tawara).
Second, Tawara teaches a range of organic particle size that overlaps with the claimed particle size range. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select the particle size from Tawara from between 0.5 to 60 µm to between 5 µm or more since it has been held that in the case where claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists.
Lastly, the Examiner notes the prior art structure of Urban in view of Tawara satisfies the structural limitations of the claimed polishing method comprising press polishing, while supplying a polishing solution, and the polishing solution having an average particle size of 5 µm or more and therefore, would inherently perform to prevent wear on a surface of the work-polishing rotating tool by preventing direct contact between the work-polishing rotating tool and the work (polishing solution is disposed between work and rotating tool thereby, preventing direct contact between rotating tool and the work).
Regarding claim 2, Urban as modified discloses the local polishing method as claimed in 1, wherein the rotating tool is made of elastic material (Urban; pp. [0024], [0029, [0036], [0038]; rotating tool 12 includes foam layer 16, i.e. elastic material, and carrier body 14 of rotating body also consists of a rubber-elastic material; fig. 1).
Regarding claim 3, Urban as modified discloses the local polishing method as claimed in 1, wherein the liquid contains water as a main component (Tawara; abrasive particles are dispersed in water, i.e. the main component; pp. [0054]).
Regarding claim 4, Urban as modified discloses the local polishing method as claimed in 1, wherein the rotating tool comprises:
a rotating body (item 10 which rotates during polishing; pp. [0033], [0045] in Urban; fig. 1);
a shaft body (items 44, 48; fig. 1) that has a tip end (end near item 48; fig. 1) provided with the rotating body and is long in an axial direction around which the rotating body is rotated (shaft body extends longitudinally in an up-down direction in view of fig. 1 relative to the rotating body); and
a rotation support portion (item 46; fig. 1) that supports the shaft body on a base end side (base end side of shaft body defined as item 44; fig. 1) thereof for allowing the shaft body to rotate around an axis center thereof (defined as axis along dashed line in view of fig. 1; rotation support portion 46 allows shaft body to rotate within channel, i.e. item 60, of rotation support portion during use), and the rotating body is pressed, at an outer circumferential surface (outer circumferential surface defined as outer surface of item 18; fig. 1) thereof, against the work to curve the shaft body (shaft body curves, i.e. tilts/bends, as the rotating body is pressed and moved along the work L, pp. [0046]) and elastic restoring force of the curved shaft body causes the rotating body to be pressed and urged against the work (elastic restoring force via item 100 causes rotating body 10 to be pressed and urged against the work; pp. [0046]; the examiner notes, “urged against” does not require direct contact between rotating tool and the work, similar to applicant’s disclosure).
Regarding claim 5, Urban as modified discloses the local polishing method as claimed in 1, wherein an outer circumferential surface of the work polishing rotating tool (defined as outermost surface of item 18; fig. 1), the outer circumferential surface facing the work (during polishing, the outer circumference faces the work to be polished; fig. 1), has an outer diameter of a polishing action region (defined as outer diameter of item 18; pp. [0031]; fig. 1).
Urban does not explicitly disclose an exact dimension of the outer diameter, such as 5.0 mm or less. First, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further modify the outer diameter of the work polishing rotating tool to be between 0 mm and 5mm. Since such a modification would involve a mere change in size of the component, a change in size is generally recognized as being within the level of ordinary skill in the art (see MPEP 2144.05). Furthermore, the claimed dimensions are recognized as result effective variable, i.e. a variable in which achieves a recognized result as set forth above. The outer diameter can vary depending on the design need to solve a problem. If the outer diameter of the work-polishing rotating tool is larger, then the lens (i.e. workpiece that is being polished) may be smaller than the rotating tool outer circumferential surface which may speed up machining times and reduce inaccuracies on the workpiece surface; while if the outer diameter of work-polishing rotating tool is smaller, then the lens (i.e. workpiece that is being polished) may be closer to, or even greater in size, than the rotating tool which requires a more precise, controlled polishing machine to improve the surface quality of the workpiece which may be more expensive. Therefore, since the general conditions of the claim (e.g. having the claimed structure as recited above) is disclosed by Urban in view of Tawara, it is not inventive to discover the optimum workable range by routine experimentation, and it would have been obvious to one of ordinary skill in the art at the time when the invention was filed to provide the outer diameter of an outer circumferential surface of the rotating tool to be between 0mm and 5mm.
Regarding claim 6, Urban as modified discloses the local polishing method as claimed in claim 1, wherein the organic particles are acrylic particles or urethane particles (Tawara; abstract and pp. [0023]; abrasive particles are acryl-based or urethane-based resin).
Regarding claim 7, Urban discloses a local polishing device (fig. 1; pp. [0029] in NPL) comprising:
a work-polishing rotating tool (item 12; fig. 1) locally pressed (via elastic force, i.e. items 92, 88, 100; pp. [0042-0044]; fig. 1) against a work (item L; fig. 1); and
machining solution supply section (solution not explicitly shown; pp. [0010], polishing agent supplied between outer surfer of rotating tool 12 and workpiece L) that supplies, between the work and the work-polishing rotating tool (pp. [0010]), a polishing solution (pp. [0010]; defined as polishing agent, not explicitly shown).
Though Urban states a good supply of polishing solution contains abrasive components that are to be transported to the point of contact between the rotating tool and the workpiece by means of the liquid (pp. [0005]), Urban does not explicitly disclose the type of polishing solution utilized, such as the polishing solution comprising abrasive grains consisting of organic particles with an average particle size of 5 µm or more dispersed in a liquid to prevent wear on a surface of the work-polishing rotating tool by preventing direct contact between the work-polishing rotating tool and the work.
However, Tawara (US 2016/0118073) teaches a method for manufacturing a glass substrate (abstract and pp. [0021]) comprising a finish-polishing step using a polishing solution containing organic-based particles as polishing abrasive particles (pp. [0021]), and the average particle diameter of the organic-based particles is in a range of 0.5 to 60 µm (pp. [0024]).
First, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to configure the polishing solution containing abrasive components, as disclosed in Urban, to consist of organic-based particles, as taught in Tawara, in order for the press-polishing method to function as intended and further, in order to reduce the amount of abrasive particles sinking into the polishing pad and improve the surface roughness of the workpiece (pp. [0010-0012], [0016-0018], and [0053] in Tawara).
Second, Tawara teaches a range of organic particle size that overlaps with the claimed particle size range. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select the particle size from Tawara from between 0.5 to 60 µm to between 5 µm or more since it has been held that in the case where claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists.
Lastly, the Examiner notes the prior art structure of Urban in view of Tawara satisfies the structural limitations of the claimed polishing method comprising press polishing, while supplying a polishing solution, and the polishing solution having an average particle size of 5 µm or more and therefore, would inherently perform to prevent wear on a surface of the work-polishing rotating tool by preventing direct contact between the work-polishing rotating tool and the work (polishing solution is disposed between work and rotating tool thereby, preventing direct contact between rotating tool and the work).
Regarding claim 8, Urban as modified discloses the local polishing device as claimed in claim 7, wherein the rotating tool is made of elastic material (Urban; pp. [0024], [0029, [0036], [0038]; rotating tool 12 includes foam layer 16, i.e. elastic material, and carrier body 14 of rotating body also consists of a rubber-elastic material; fig. 1).
Regarding claim 9, Urban as modified discloses the local polishing device as claimed in claim 7, wherein the liquid contains water as a main component (Tawara; abrasive particles are dispersed in water, i.e. the main component; pp. [0054]).
Regarding claim 10, Urban as modified discloses the local polishing device as claimed in claim 7, wherein the rotating tool comprises:
a rotating body (item 10 which rotates during polishing; pp. [0033], [0045] in Urban; fig. 1);
a shaft body (items 44, 48; fig. 1) that has a tip end (end near item 48; fig. 1) provided with the rotating body and is long in an axial direction around which the rotating body is rotated (shaft body extends longitudinally in an up-down direction in view of fig. 1 relative to the rotating body); and
a rotation support portion (item 46; fig. 1) that supports the shaft body on a base end side (base end side of shaft body defined as item 44; fig. 1) thereof for allowing the shaft body to rotate around an axis center thereof (defined as axis along dashed line in view of fig. 1; rotation support portion 46 allows shaft body to rotate within channel, i.e. item 60, of rotation support portion during use), and the rotating body is pressed, at an outer circumferential surface (outer circumferential surface defined as outer surface of item 18; fig. 1) thereof, against the work to curve the shaft body (shaft body curves, i.e. tilts/bends, as the rotating body is pressed and moved along the work L, pp. [0046]) and elastic restoring force of the curved shaft body causes the rotating body to be pressed and urged against the work (elastic restoring force via item 100 causes rotating body 10 to be pressed and urged against the work; pp. [0046]; the examiner notes, “urged against” does not require direct contact between rotating tool and the work, similar to applicant’s disclosure).
Regarding claim 11, Urban as modified discloses the local polishing device as claimed in claim 7, wherein an outer circumferential surface of the work polishing rotating tool (defined as outermost surface of item 18; fig. 1), the outer circumferential surface facing the work (during polishing, the outer circumference faces the work to be polished; fig. 1), has an outer diameter of a polishing action region (defined as outer diameter of item 18; pp. [0031]; fig. 1).
Urban does not explicitly disclose an exact dimension of the outer diameter, such as 5.0 mm or less. First, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further modify the outer diameter of the work polishing rotating tool to be between 0 mm and 5mm. Since such a modification would involve a mere change in size of the component, a change in size is generally recognized as being within the level of ordinary skill in the art (see MPEP 2144.05). Furthermore, the claimed dimensions are recognized as result effective variable, i.e. a variable in which achieves a recognized result as set forth above. The outer diameter can vary depending on the design need to solve a problem. If the outer diameter of the work-polishing rotating tool is larger, then the lens (i.e. workpiece that is being polished) may be smaller than the rotating tool outer circumferential surface which may speed up machining times and reduce inaccuracies on the workpiece surface; while if the outer diameter of work-polishing rotating tool is smaller, then the lens (i.e. workpiece that is being polished) may be closer to, or even greater in size, than the rotating tool which requires a more precise, controlled polishing machine to improve the surface quality of the workpiece which may be more expensive. Therefore, since the general conditions of the claim (e.g. having the claimed structure as recited above) is disclosed by Urban in view of Tawara, it is not inventive to discover the optimum workable range by routine experimentation, and it would have been obvious to one of ordinary skill in the art at the time when the invention was filed to provide the outer diameter of an outer circumferential surface of the rotating tool to be between 0mm and 5mm.
Regarding claim 12, Urban as modified discloses the local polishing device as claimed in claim 7, wherein the organic particles are acrylic particles or urethane particles (Tawara; abstract and pp. [0023]; abrasive particles are acryl-based or urethane-based resin).
Regarding claim 13, Urban as modified discloses a corrective polishing device (fig. 1 discloses a polishing device for fine machining of optically effective surfaces; pp. [0029] in NPL), wherein the local polishing device as claimed in claim 7 is used (item 12 is utilized to polish an effective surface F; fig. 1).
Response to Arguments
Applicant’s arguments with respect to claims 1 and 7 have been considered but are moot because a new grounds of rejection is made in view Urban (EP 1698432), one of the primary references utilized in Non-Final Rejection filed on 09/25/2025 and provided by Examiner in Office action filed on 04/17/2025, and further in view of Tawara (US 2016/0118073), which was previously cited in PTO-892 of Office action filed on 118/2023.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Tsuchiya (US 2016/0215189) discloses a polishing composition with which surface defects can be efficiently reduced, wherein the polishing composition comprises a water-soluble polymer having a cationic region.
Niwano (US 2017/0252890) discloses a polishing method using a polishing agent containing abrasive grains selected from particles composed of silicon or metal element, organic particles, and organic-inorganic particles.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SIDNEY D FULL whose telephone number is (571)272-6996. The examiner can normally be reached Monday-Friday, 7:00a.m.-2:30p.m..
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Keller can be reached on (571)272-8548. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SIDNEY D FULL/Examiner, Art Unit 3723